Scott A. McKeown
Partner
Tel (703) 412-6297

Scott A. McKeown

Partner

SCOTT A. McKEOWN is a member of the firm's Management Committee, and co-chairs the Post Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He leads the Post Grant Patent team responsible for electronics, wireless communications, software and computer-related inventions and business methods.

Mr. McKeown handles all aspects of post-issuance proceedings at the United States Patent and Trademark Office (USPTO) including patent reissue and reexamination proceedings, post grant patent trials, and appeals to the Court Of Appeals for the Federal Circuit. He offers his clients comprehensive post-grant patent counseling including advice on USPTO post grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Having successfully navigated USPTO post grant patent proceedings in which more than half a billion dollars was at stake, Mr. McKeown is one of the preeminent post grant practitioners in the United States. He is lead post grant counsel to some of the largest corporations in the world.

Mr. McKeown has been identified by Intellectual Asset Management as a “thought leader” and one of the world’s leading patent practitioners for adversarial post-grant USPTO patent proceedings. In addition, the Legal 500 has identified Mr. McKeown as a recommended patent attorney.

Mr. McKeown is the editor of the firm's Patents Post-Grant blog, regularly contributing insights and commentary on USPTO post-grant patent proceedings, trends, practice tips and news. He lectures and writes extensively on post-grant proceedings at the USPTO and is a member of the teaching faculty of the Practicing Law Institute (PLI). Currently, Mr. McKeown is the Chair of the American Bar Association (ABA), Intellectual Property Law Section Committee 104 (Post Grant USPTO Proceedings).

A former electrical engineer, he has worked with a wide range of technologies, including computer software, wireless telecommunication protocols and network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics. In the telecommunication arts, Mr. McKeown has worked extensively with IP routing and signaling protocols, ATM and wireless communication protocols. He also has a broad breadth of experience with OFDM systems, CDMA, TDMA, FSK, QAM and the 802.11 family of protocols.

In the consumer electronic arts, Mr. McKeown's practice has a strong focus in audio and video processing and display technologies, discs, signal compression and encoding schemes, recording medium formatting and construction, and many other related technologies.

Representative Matters

As lead patent reexamination counsel to Motorola Inc., successfully recovered significant patents of the company’s handheld device portfolio from patent reexamination. These patents are asserted against several competitors in concurrent litigation in the ITC and district courts.

As lead patent reexamination counsel to Eastman Kodak, responsible for recovering their electronic camera portfolio from patent reexamination. Concurrent litigation is pending in the ITC and district courts throughout the U.S.

As lead patent reexamination counsel to Good Technology, successfully recovered the patent portfolio from both ex parte & inter partes patent reexamination proceedings resulting in a favorable settlement of concurrent litigation with a competitor ($267.5 million).

Thursday, December 20, 2012

Outdated Initiative Draws Renewed Attention from U.S.

Wednesday, December 19, 2012

Technical Amendment Passes First Hurdle
Yesterday, the House considered H.R.

Tuesday, December 18, 2012

H.R.

Thursday, December 13, 2012

Concurrent Post Grant Proceedings with the Same Real Party in Interest
One of the more intriguing aspects of the new patentability trials of the America Invents Act (AIA) is their potential interplay with legacy post grant

Tuesday, December 11, 2012

USPTO Reports Early Popularity….But Will it Last?
The America Invents Act (AIA) provides patent challengers with the most robust mechanisms ever offerred to challenge a U.S. patent at the USPTO.

Monday, December 10, 2012

Terminal Disclaimer Permanent Once Patent Issues
Back in January of 2011 I discussed the appeal decision in Ex parte Shunpei Yamazaki relative to...

Friday, December 07, 2012

USPTO Seeks Input to Address Growing RCE Inventory
Request for Continued Examination (RCE) filings are largely a creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of...

Wednesday, December 05, 2012

Repeal of 325(f) May Have Unintended Consequences
As discussed earlier this week the House is currently considering H.R.

Monday, December 03, 2012

Straight Forward Changes Expected to Pass Quickly
As discussed last month, Congress will be considering a tec

Friday, November 30, 2012

AIA Creates Dilemna for USPTO on Patent Ownership
This past Monday, the USPTO issued a Notice in the Federal Register entitled Notice of Roundtable on Proposed Requirements for Recordation of R